Using your IP rights
by
DCS Lawyers
The subtle difference between the wine and beer markets was enough to cause E&J Gallo Winery (Gallo) lose out in an IP dispute against Lion Nathan Pty Limited. Gallo registered the trademark ‘Barefoot’ in 2005 to be used on their wine bottles. The dispute arose when Lion Nathan later released a beer called ‘Barefoot Radler’, with a picture of a bare foot on the label.
Gallo launched proceedings against Lion Nathan for breaching their trademark. The judge confirmed the trademark was indeed “substantially similar”. However, unfortunately for Gallo, no breach of IP was found as the judge found their wine was in a different category of goods to Lion Nathan’s beer, and Gallo had failed to broadly register the trademark to cover all possible competitors. The judge’s decision was reinforced by the fact that Gallo failed to use the barefoot trademark on any substantial basis since registration.
So, how can you prevent your trademark going the way of Gallo’s “Barefoot”? Firstly, take great care to ensure that when you apply for a trademark you consider every possible class of good or service to which the trademark might relate. Secondly, when you register your trademark ensure that you commence using it as soon as possible.
Finally, make sure that you think about what you will be doing with your trademark in the future as the goods or services you provide evolve over time. If your business grows in a direction which takes it out of the classes of goods or services that you selected at registration, you might have some problems protecting your IP. It is worth seeking advice on how to obtain the broadest IP protection for your trademark to ensure it is covered for all possibilities.
Gabrielle Lourens
DC Strategy - franchise consultants
06.08.2008
FCA Member
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